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By J.D. Houvener
Patent Attorney and Founder

J.D. Houvener your host of the Bold Today show, where we’re going to answer any questions about patent law that you may or may not have on your mind right now. But I’m welcoming all business owners, entrepreneurs, inventors, of course, men, women, all genders, all ages. Some of you may not know, invention and being an inventor, there’s no age requirement. You don’t have to be 18 or show ID or anything. As long as you’re able to write down and describe in words or through drawings, you can get a patent through the U.S. Trademark and Patents Office.

So, very good. Well, the first minute or so, wait for people to join in. For those that are just joining in, first-time viewers, we’re here every week, every Wednesday at 9 a.m. Pacific and noon on the East Coast. And this is a live Q&A with myself. I’m the owner of the Bold Patents law firm, behind me. I’m a patent attorney, used to be an engineer at Boeing and a few other things. So, bring on all those live questions. I will prioritize those above any of the questions that came in during the week through avo.com. And I’ll wait for some people to join in here over the next couple of minutes, and we’ll jump into our topic today, which is going to be IP101.

I love jumping into this because it’s awesome. People are sometimes confused about the different areas of intellectual property, known as IP. And this is just a nice opportunity, you know, as we’re getting into fall, people are getting serious, you know, kind of cracking their knuckles, getting ready to jump into something serious in the fall. Of course, I’ve got legal notice here, the interchange. If we do end up getting into, you know, a live dialogue, I am not giving legal advice. Okay, just gonna be talking about the law in general. And I’ll be able to give you potential answers to hypotheticals or even situational questions. But I’m not gonna give you legal advice. And this is not a confidential discussion, of course, this is a live broadcast. So please don’t share anything confidential. Not the right form to share your invention if it has not yet been publicized. So, thank you for that note.

And for those that are waiting to see what to do and the way you want to contact us, I know that I will be providing a link later on for you to book a consultation with one of our patent attorneys. Okay, so we’re just a few minutes out. I wanted to show you guys one cool thing that came up. I finally got the copy of my new book. And, you know, I’ve kind of gotten a habit of writing books. This is my latest. This is the Physician’s Guide to Patents. So, I wrote a book specifically to physicians. And I didn’t discriminate in the front cover. In the front intro, I talked about all different types of doctors. Okay, people that are in the healthcare industry, this would apply to everyone from orthodontists, family care practitioners, neurologists, oncologists, chiropractors, dentists. And, in fact, dentistry is the example I used. Dr. Bright and his assistant, Mrs. Bulb, she actually ends up being the inventor in this example that I carried through. So, if you want a copy of this, if you’re a physician or maybe you know a physician, I would love to get you a copy of a physical book and, of course, a PDF just for you being download on this show.

All right, well, we’re a couple of minutes into it. I think I’m going to jump in. No live viewers right now, and that’s okay. But if you’re watching this after the fact and you want to get a hold of me, I’m going to put my contact information here below. That’s my direct email. I’m pretty responsive during the week. And you can send in a text message as well to that 206 number. I’ll generally go back with you within the same business day.

Cool. Well, let’s share my screen. I’m gonna dig into IP101, and I’ll share my presentation. We’ll take some time looking at the differences in the areas of IP. To illustrate, property IP is made up of four main areas, patents, of course, also trademarks, copyrights, and trade secrets. Those are the four pillars that hold up the umbrella of intellectual property. And so, what is it, right? What is intellectual property? So generally, it’s a property of a product of the minded human intellect. And why is it important? Well, it’s a wonderful way to reward inventors, allow them to have the opportunity to make money, a commercial gain for sharing their ideas and inventions with the world.

So, patents are all about protecting and allowing you this monopoly. Okay, we probably all have seen or maybe if you haven’t seen it, you’ve heard of a slinky. I love this example. Goes way back to 1947. Awesome, right? It’s new, non-obvious, and has utility. And utility doesn’t need to be some sort of mechanical advantage or some sort of scientific breakthrough. Utility can definitely be entertainment. You know, much like the slinky was. So, very cool. So, there it is as an example from way back, 80 years ago. You get 20 years of protection for a utility patent. So, what do you need to do? And what does your invention qualify? And, you know, most inventions do, let’s just start with that. If you’ve got a machine, something that’s been manufactured, you can build it. If it’s a composition of matter, like at the atomic level, a new mixture formula or a new process and process is huge and really takes steps in the order of operations, method or process of doing things in the real world, it’s eligible.

And so, this really encompasses everything. The only few things that don’t fall into this bucket are things like laws of nature, right? Gravity or certain equations and pure algorithms that are just matters of fact or laws of nature, products of the earth. You’re not going to get ownership and protection over that. It’s actually has to be from your own mind and own ingenuity. Can’t be something that’s already existing in the world. So, this is a long list here. I’m not going to go through all this, but it’s kind of fascinating to know that in order to get a patent application, you know, date, which is super important also called the filing date, you know, because the way the law is set up now, we reward inventors that file, right? That say, you know, that are willing to share their invention and not keep it a secret. You only have to file your drawings, your spec, which is the written description, and a set of claims in order to get that filing date. And you’re the first to invent; everything else can come later, right? You could pay later. You can tell them basically who you are later. But as long as you share what your invention is, they’re gonna get you that filing date.

Going way back to the constitution, the founding fathers believed so powerfully they wanted to make sure they rewarded people for, you know, for sharing their ideas. Right? They want to give exclusive rights to their discoveries to promote the progress of science and useful art. So, this is sort of perhaps one of the major reasons why the U.S. became such a dominant force in technology because we rewarded companies, individuals for showing and providing evidence, here’s the next improvement, here’s the next way to solve this problem, and they give a patent for that solution. So, kudos to the founding fathers for setting this up, right? So, lots of stuff came up with patent. I don’t want to mire in the details here, you know, how do you enforce your rights? You know, definitely take them to federal court, go to the Patent Trial and Appeal Board, you know, you can get a blood opinion, send a cease and desist letter, settle. If things get messy, then go to court, right? A lot of our inventors make money through licensing or through sale. So, the patent rights act much like any other asset we think of like owning your home, a deed to your house, car, something that’s tangible and this is not quite, you can’t touch and feel the rights, but it’s they act the same way and that they’re fully licensable, transferable, defendable presence, you know, heaven forbid you pass away, they can be passed along through your will, and of course, you can assign them which just means you can transfer ownership.

All right, I want to go through trademarks. Let me see if you have any live questions here so far on patents. Okay, nothing came through just yet. So, let’s look at I think we’ll look at trademarks.

All right, all right, here we go. So, trademarks, the whole basis is about the customer’s perspective, right? Who is looking at your products or services, and what do they think? What do they actually know about your company? How do they associate those goods and services to you, to your company? That’s it. That’s trademark law. And in order to get a registration, okay, you have to be distinctive, I mean, you have to stand out and be actually different. The word itself or the design, I mean, the logo has to be different enough than your competitors that are selling the same types of goods and services. That’s really, that hopefully summarizes it. I mean, some of these famous marks you see over here, they’re able to enjoy some additional benefits, right? You know, the golden arches is probably the most famous trademark in the world. I mean, this got so much recognition that even people that tried to make big changes get busted because they’re using the same colors, they’re using the arches, and even kind of an attempt at changing the arch that’s not good enough. These companies all got shut down by McDonald’s because customers look at that and they think, ‘Oh, that looks like McDonald’s. That was probably just as good of a hamburger as McDonald’s, or I feel more comfortable here, so I’m gonna go to this restaurant because it’s that goodwill that has been brought up and earned by McDonald’s, not these companies that are infringing.’ Okay, so that’s really trademarks in a nutshell. Let’s take a peek at copyright. You know, copyright is vast, fast, fast-passing. Copyright covers really any creative art, um, meaning anything that’s created with respect to, you know, from your own mind that is fixed in a tangible format, okay? And that just means it can be recorded or replayed or shown such that, you know, someone else could go take it and make copies of it if it’s, you know, if you write it, make a beautiful painting, but it was a dry erase marker, and after you create it, you erase it and no one took a picture of it and it never got recorded, yeah, you can’t get copyright protection for it because there’s no validation, no way to verify that it ever existed. So, that’s sort of the hallmark, uh, the three requirements: it must come from your own mind, must be independently created, it must be an artistic expression, which is a very, very low bar, and three, it must be fixed in a tangible means so that it can be, you know, cognized, right, really understood as to what it is within the four corners. And to get a registration, you can see an example of registration, uh, through the Library of Congress, mind you, not the U.S. Patent and Trademark Office, Library of Congress, a different section of the government, we’ll actually give a registration number, um, and we’ll provide, you know, prima facie evidence, which is a fancy word for on its face, right, you know what the actual artistic work comprised of, who made it at what time so that if it does end up getting litigated, if there is a future infringement suit or some, you know, adjudication as to the validity of the copyright, you can use that registration, uh, for the judge. They don’t have to, you don’t have to prove in another way that you actually are the author, so it’ll be helpful. Copyrights cover music, artistic expressions, I mean, you think paintings, sculptures, all sorts of different ways, you can be artistic, dance, and all sorts of ways. All right, trade secrets. This is a really cool subject, uh, because it really is state-specific in a way. Every state has laws on the books, so, for example, Washington, this is their, uh, Revised Code of Washington 19.108. The requirements are usually the same because what’s nice is there is a Uniform Trade Secret Act that was put in place, you know, years back, and most states have adopted that, thank goodness. So, we have these three main elements, you know, how do you get a trade secret? Well, first of all, one of these big notions is that people think sometimes when, you know, to get a trade secret, some government agency is going to give you a certificate. In this case, it’s not true, right? You know, you’re not supposed to tell, so keeping it a secret just meeting these three elements, you have a defensible trade secret. So, if you’re making efforts to keep it secret, okay, and that’s kind of a high-level rule but using modern technology, right, using available security measures, uh, you know, two-factor authentication, uh, making sure you’re not, you know, leaving the sticky note with the password, you know, right on the kitchen, uh, you know, the shared, you know, communal watering hole or something like that, right? We actually make an effort to show that it’s, uh, it really is confidential. The information has to be valuable, and one great test here is to see if this got in the hands of the competitor, would it be valuable? Would they be able to put it to use right away and make money with it? And the other one is it’s not easily ascertainable, meaning it’s not something that the public generally knows. That doesn’t mean the public couldn’t know it; it also means the public doesn’t know it. So, meaning you can actually have a trade secret that’s enforceable, defensible, even though many other people or companies have the same secret information. It’s a really fascinating subject, but as long as they’re all on their own keeping it confidential, and it’s not known in the public, it can still qualify. Okay. All right, that is really it. I won’t go too much more and perhaps more, some of you guys, that’s the nuts and bolts of intellectual property, those main areas of patents, trademarks, copyrights, and trade secrets. I do wish we had a bigger live audience here today for those Q&A, but because we don’t, I will jump to the avo.com questions and go to our first one, which is out of Seattle, Washington, which was asked just three days ago, and this one’s a little bit lengthy, so I will kind of set the question up, and then I’ll go through their sub-questions.

All right, so their question is how to modify and revive an abandoned utility patent application, which is abandoned by a scam law firm five years ago. I have a problem about my patent. I’ve obtained a utility fat application for my invention about five years ago. The law firm which I worked with started to register for my utility patent application, but after a year, they told me they have closed their company and they abandoned my application, which means all my $4,000 and efforts are gone. They have given me…

Continues on here.

A receipt of the utility patent application, and now I’ve modified the invention one to patent again. Okay, well, this is a true tragedy. It’s too bad that this prior law firm didn’t take care of you before they wrapped up business, and, you know, for the same reason, it’s a shame that you didn’t necessarily know about it or know what to do. You weren’t advised on how to take action to make sure you didn’t allow that application to go abandoned, so sorry that happened to you. What I will say, and let me just put these other questions that you asked here on the board before I get into my answer, so there are kind of two questions that came out of that: Is it possible to apply my modifications to the previous application and obtain the patent after these five years? What shall I do? And the question number two is, is there any possibility to refund some of the money which is paid to the office on fees? Okay, so question one, um, it can be a little detailed, I would say, um, before you start applying modifications, you would need to make the effort to revive the original, okay? You can certainly petition to revive an application. It gets harder and harder the longer you wait since abandonment. You know, there are kind of three or four different ways, a rationale as to why you might need to petition to revive. Um, you’ve got a really good argument that your attorney that was your, you know, when you were relying on for information and correspondence from the patent office misled you and perhaps even acted in malpractice to allow the patent application to go abandoned without really taking action and informing you on how you could avoid that. So, explaining that may win it on its own. There is a second one where they may come back and say, ‘Well, okay, even if that’s true and you were notified that it was abandoned, why did you not do anything for five years or maybe four years, right?’ Um, and then you could have a second sort of sub-argument, maybe it’s if there’s a financial issue, right? Maybe though you didn’t necessarily want to pursue it based on the fact you didn’t have any money, and they may request some information with respect to your income and tax returns. Um, it may not get that far; it may be enough to just say that, ‘Look, your attorney dropped the ball, and you thought it was moving forward, and even though it took so long, you’re now at the point where you’re ready to move forward with it and handle it on your own or hire new counsel to help you with it.’ So, reviving that first one is the first step. If you’re able to succeed and get back on track to prosecute your patent application, that’s when you could work with your patent attorney you’re working with or even if you’re filing pro se on your own, you could follow what’s called a continuation application, and if those modifications are significant enough, right, improvements are, you know, so big that they would be deemed to be new matter, of course, it’s a legal question, you know, meaning is that, that new improvement or modification big enough to where it really wasn’t discussed in enough detail in the original spec as filed, then you would need to file this continuation application. It is certainly possible that if they’re just relatively minor, they’re just additional details of what you originally filed, you could file a supplementary specification, which may go well, you know, in terms of the examination getting that re-examined back with that same examiner. So, thanks for that question. Your second part of the question is trying to get a refund from the patent office. I have never seen the patent office give refunds, and certainly not after five years. It is a shame; I think the majority of that money sounds like it went to the law firm, so I’ll leave that to you as to whether you want to go try to get that money back from those individuals or that it may already be too late to do that, but thank you for your question; that was really cool, appreciate the details. Okay, probably just one or two more questions here. Just close the door.

With one question on patent infringement, and it will probably wrap up here. All right, so this one is out of New York, four days ago. Okay, so I’ll put the question in the comments.

All right, so will I infringe a patent if I make an electric skateboard and sell it despite the fact that electric skateboards are patented? It is possible for me to make this type of product without having wheels, boards, trucks, motors, pulleys, and a battery, but in the patent, they claim all of the above. I’ve noticed multiple companies doing their own luxury skateboard products, and I was wondering, can I do the same without any backlash from the owner of the patent? Here’s the patent number. You know, I’m just like, here, obviously. I may just pull that patent up for just a second. It might be a cool way to show how to look up patent applications as well. Okay, so let’s put this down, and I’ll go share my screen.

And maybe watch the top of the fact that’s curious on how to look up a patent. Google patent, pretty awesome. And right there, I just copied and pasted that application number. You can see it’s an electric skateboard, and you can pull it up right here. So, the underlying patent.

Let me just take a little bit more to pull up here. Now, this is a publication number, but it did result in a patent, I assume, at some point. But just so you know, this is just a publication, that’s a publication number. And we have to do a little bit more research to see if this actually got granted. Let’s assume that this application got granted.

Yeah, I’m kind of curious, actually. All right, so I’m going to say one more step. I don’t want to bore you guys too much.

I’m curious to see if this patent actually got granted.

You’ve got a public pair, this is the Patent Application Retrieval System. You can search by publication number or patent application number.

Okay, and this does happen, this is live, and just hit refresh.

Okay, so here it is, and this is a patented case, okay? You see the application that I searched, that 13-9954768 did result in a patent, and so they can go to published documents patent number 9387.

And so, we’re going to view full images.

Let’s see it on the full patent side. Okay, so 9387388. Let me go back over to Google. If we wanted to, let’s just show you again. You could type in that patent number, which is going to give you the more final patent right there. Okay, so that’s actually the true patent, see the difference? The patent number issued at the top as opposed to just the output, the publication number. So, let’s go quickly to the claims. I know it took a little bit while on that. It’s always going to show people how to actually go do searching on their own, so heading down to the claims, this is a monster claim. Wow, this tells me that this is extremely narrow. Okay, they mentioned claimed as an assembly for motorizing a skateboard comprising all of these things. Okay, there’s a lot, a lot of elements here. So, I’ll just go through quickly. This is a motor mount, the truck has a bushing and a kingpin. The skateboard axle passes through the hanger, a pulley, the pulley is positioned on the axle. A drive wheel hub where the hub is positioned on the wheel hub surrounding the axle, a torque transfer mechanism where that torque transfer mechanism is further configured on the drive box. More clarification about the torque transmittance is interconnected with the motor axle drive axle, wherein the pulley and wheel hub are connected. And then lastly, where the pulley interconnects with the wheel and drive hub. So, what I’m saying by this is a very, very long claim. In order for this patent to be infringed, every single element of that claim, every little clause, every word, honestly, every part of this must be true. So, if just directly, I can tell you that if you’re going to make a new assembly for motorizing a skateboard, if you’re able to find a way to do that without having a drive pulley, I mean, this is one element, if you can make it without having a drive pulley or make it to where the axle doesn’t pass through a hanger or make it to where the drive wheel hub is not positioned to where any portion of it touches the surrounding axle, right? You see them getting it. If there’s no torque transfer mechanism at all, then you’re not infringing. Okay, so if any one of these is missing, if any one of these elements is not found in what you’re producing, this patent is not infringed. Now, to get a written opinion on that, you’re going to want to contact me. You can use that information I gave you up above. I’ll find a patent attorney. He doesn’t have to be our firm and myself, of course, but a current opinion is something you can rely on that someone investing in your product, maybe a big manufacturer, would probably want to get, and we do deliver that to quite a few inventors and business owners. But that is it appears this to be a relatively straightforward patent to get around, right? To design around and avoid infringement. That doesn’t mean you would avoid a lawsuit. Okay, anyone can sue anyone, unfortunately, in this world, but you know that you’d be on solid ground if you were ever challenged. All right, well, I hope that answered those two questions thoroughly. I’m glad we get to those. Again, hope you guys will join us next week. I’ll be here every Wednesday 9 a.m Pacific and noon on the East Coast. Have a great issue, everybody. Go big, go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/